Forward-Publishing Your Patents? Best and Worst Case Scenarios...

[Electronics and audio companySonosrecently announced it will be 'forward-publishing' its patents to inspire others to 'create differentiated products.' We asked JD Supra contributors with expertise in these matters to tell us: beyond inspiring innovation, what are the best- and worst-case scenarios for a company forward-publishing its patents. Here is what we heard back from attorney Daniel Rose, a member of Foley & Lardner's Electronics practice:]

The absolute best-case scenario that can result from forward-publishing a patent application is that the patent owner can notify competitors of the existence of the application, and can potentially reach back after the patent issues and collect royalties for infringement starting from the time period at which the patent application is first published. However, this requires that the patent issues with one or more claims essentially unchanged from their published form, which is quite rare. Typically, the claims are amended at least once during prosecution of the application before the Patent Office, which would terminate the patent owner’s rights to royalties during this period.

Additionally, as utility patent applications are published eighteen months after filing unless the patent owner files a non-publication request, even in instances where the claims are not amended before issue, forward-publishing the application prior to the normal publication period would only result in a year and half’s worth of additional royalties at most.

The absolute worst-case scenario that can result is that the application is published and competitors are able to figure out ways to design around what is described in the application. With prosecution of patent applications frequently taking between three to five years between filing and grant, competitors may have significant time to redesign products as necessary to avoid any potential infringement. As a result, any patent issuing from the application may have limited effect in securing a meaningful monopoly. Worse still, competitors may submit prior art to the Patent Office during prosecution of the application, either scuttling the application or forcing the patent owner to narrow the claims beyond what would have been otherwise necessary.

...patents are a tool to discourage inventors from keeping trade secrets, by trading public disclosure for a limited monopoly. Forward-publishing an application is a deliberate embrace of this philosophy, eliminating even the temporary period of confidentiality before the application would normally be published.

Nonetheless, a forward-published application that accurately describes the patent owner’s product may be useful for discouraging competitors from entering the field or for directly competing with the patent owner’s product, even if alternate implementations are possible. For example, a competitor may be able to create a product that would not infringe any patent resulting from the application, but at such an increased cost that it is not economically feasible. Similarly, for design patent applications, which cover the look and feel or aesthetic design of a product, a competitor may be easily able to design around any potential claims by changing the look and feel of their product. However, the result may be less aesthetically pleasing to consumers, or not as distinctive or memorable, reducing marketing effectiveness. Additionally, the patent owner may have an easier time securing additional funding with publicly reviewable patent applications.

Finally, forward-publishing applications may result in increased public goodwill. Fundamentally, patents are a tool to discourage inventors from keeping trade secrets, by trading public disclosure for a limited monopoly. Forward-publishing an application is a deliberate embrace of this philosophy, eliminating even the temporary period of confidentiality before the application would normally be published. The marketing and publicity benefits may outweigh any losses from advance warning to potential infringers.

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[JD Supra's Law Matters series asks experts for their quick take on popular news of the day, and specifically how such matters affect people in their personal or professional lives. Stay tuned for other posts in the series.]

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